NORTHROP GRUMMAN SYSTEMS CORPORATION

Patent Trials and Appeals Board

Dec 23, 2020

2019006723 (P.T.A.B. Dec. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/073,372 03/17/2016 XING LAN NGC-00206(007655-0030) 1290
64728 7590 12/23/2020
SHUMAKER, LOOP & KENDRICK, LLP
NORTHROP GRUMMAN CORPORATION
1000 JACKSON STREET
TOLEDO, OH 43604
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cgolupski@shumaker.com
hpeppard@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________
Ex parte XING LAN
and CHUNBO ZHANG
______________
Appeal 2019-006723
Application 15/073,372
Technology Center 1700
______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20 of Application 15/073,372. Non-
Final Act. (May 31, 2019). Because at least one of the pending claims is
twice-rejected, we have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Northrop Grumman Systems Corp. as the
real party in interest. Appeal Br. 4.
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I. BACKGROUND
The ’372 Application describes a micro-electromechanical system
(MEMS) switch that is fabricated on a substrate using ink printing
technologies. Spec ¶ 1.
Claims 1 and 16 are representative of the ’372 Application’s claims
and are reproduced below from the Claims Appendix:
1. A method for fabricating a micro-electromechanical
system (MEMS) switch, said method comprising:
providing a substrate;
printing at least one bias electrode, at least one
connection pad and at least one contact pad on the substrate;
printing a sacrificial layer on the substrate and over the at
least one bias electrode and at least part of the contact pad;
printing a flexible beam structure on the sacrificial layer;
and
removing the sacrificial layer to release the beam
structure so that the beam structure is spaced some distance
from the at least one bias electrode and the contact pad.
16. A method for fabricating a micro-electromechanical
system (MEMS) switch, said method comprising:
providing a substrate;
printing a plurality of metal bias electrodes, at least one
metal connection pad and at least one metal contact pad on the
substrate;
printing a sacrificial layer on the substrate and over the
plurality of bias electrodes and at least part of the contact pad;
printing a flexible beam structure including printing a
first polymer layer on the sacrificial layer, printing a conductive
layer on the first polymer layer, and printing a second polymer
layer on the conductive layer; and
removing the sacrificial layer to release the beam
structure by dissolving the sacrificial layer in a wet solution so
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that the beam structure is spaced some distance from the
plurality of bias electrodes and the contact pad.
Appeal Br. 21, 23 (Claims App.).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 3 is rejected under 35 U.S.C. § 112(b) as indefinite. Non-
Final Act. 2.
2. Claims 1 and 6–8 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park2 and Bulovic.3 Non-
Final Act. 4.
3. Claims 2, 16, 17, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Bulovic, Liu,4 and
Daniel.5 Non-Final Act. 6.
4. Claims 2, 3, 16, 17, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Bulovic, Liu,
Colton,6 Tai,7 and Daniel. Non-Final Act. 9.

2 E. S. Park, Application of Inkjet-Printing Technology to Micro-Electro-
Mechanical Systems, University of California at Berkeley, Technical Report
No. UCB/EECS-2014-44 (2014),
http://www2.eecs.berkeley.edu/Pubs/TechRpts/2014/EECS-2014-44.pdf.
3 US 2011/0206839 A1, published Aug. 25, 2011.
4 US 2007/0236307 A1, published Oct. 11, 2007.
5 US 2010/0181871 A1, published July 22, 2010.
6 US 2007/0237676 A1, published Oct. 11, 2007.
7 US 6,094,116, issued July 25, 2000.
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5. Claims 4, 5, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Bulovic, and
Weaver.8 Non-Final Act. 11.
6. Claims 9–11 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Park, Bulovic, and Liu. Non-Final
Act. 11.
7. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Bulovic, Wan,9 and
Tai. Non-Final Act. 14.
8. Claims 11 and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Bulovic, Liu, and
Nelson. Non-Final Act. 15.
9. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Bulovic, and Ebel.10
Non-Final Act. 17.
10. Claims 16–18 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Park, Bulovic, Liu, Daniel, and Nelson.11
Non-Final Act. 17.
11. Claims 16–18 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Park, Bulovic, Liu, Colton, Tai, Daniel,
and Nelson. Non-Final Act. 18.

8 US 2002/0195674 A1, published Dec. 26, 2002.
9 US 2005/0146241 A1, published July 7, 2005.
10 US 2007/0044289 A1, published Mar. 1, 2007.
11 US 6,646,215 B1, issued Nov. 11, 2003.
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III. DISCUSSION
A. Rejection of claim 3 as indefinite
The Examiner rejected claim 3 as indefinite. Non-Final Act. 3.
Claim 3 is reproduced below from the Appeal Brief’s Claims
Appendix.
3. The method according to claim 2 wherein the first and
second polymer layers are Teflon polymer layers.
Appeal Br. 23 (Claims App.).
The Examiner determined that this claim is indefinite because “the
trademark or trade name cannot be used properly to identify any particular
material or product.” Non-Final Act. 3 (citing MPEP § 2173.05(u)).
Appellant asserts that the Examiner reversibly erred because
“everybody knows what Teflon is, including those skilled in the art, with or
without the benefit of the [S]pecification.” Appeal Br. 10; see also Reply Br.
1.
Even assuming Appellant is correct, as likely is the case for persons of
ordinary skill in the art, we agree with the Examiner that the Teflon
trademark describes the product’s origin, but not the product itself. Answer
3; see also MPEP § 2173.05(u). Appellant does not direct our attention to
any disclosure in the Specification that further defines the identity of the
Teflon polymer. Appeal Br. 10; Reply Br. 1. Rather than using the brand
name, Appellant is required to identify the recited material with
particularity, e.g., by reciting the product’s ingredient(s). Ex parte Simpson,
218 USPQ 1020 (BPAI 1982).
Thus, we affirm the Examiner’s rejection of claim 3.
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B. Rejection of claims 1 and 6–8 over Park and Bulovic
Appellant argues for reversal of the rejection of these claims on the
basis of limitations found in independent claim 1. Appeal Br. 10–11.
Accordingly, we limit our discussion to claim 1. Claims 6–8 will stand or
fall with independent claim 1 from which they directly or indirectly depend.
The Examiner rejected independent claim 1 as unpatentable over the
combination of Park and Bulovic. Non-Final Act. 4–5.
Appellant alleges that the Examiner erred in combining Park’s MEMS
switch and Bulovic’s ink-jet printed sacrificial layer because: (1) Park does
not disclose any “alternative steps” for fabricating a MEMS switch and
(2) layers other than the sacrificial layer in Park’s MEMS switch are
deposited by ink-jet printing. Appeal Br. 11.
We are not persuaded that the Examiner reversibly erred in finding
that the combination of Park and Bulovic would have rendered the subject
matter of claim 1 prima facie obvious. “A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.”
In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993); see also In re Bell, 991
F.2d 781, 783 (Fed. Cir. 1993); In re Lalu, 747 F.2d 703, 705 (Fed. Cir.
1984) (“In determining whether a case of prima facie obviousness exists, it
is necessary to ascertain whether the prior art teachings would appear to be
sufficient to one of ordinary skill in the art to suggest making the claimed
substitution or other modification.”). In reviewing the Examiner’s
conclusion that a claim is prima facie obvious, we take into account “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Here, the Examiner found that Bulovic’s MEMS device may include a
printed sacrificial layer, which beneficially provides a flat printed surface
suitable for subsequent depositions, such as a cantilever. Non-Final Act. 5
(citing Bulovic ¶ 9). The Examiner also found that Bulovic’s printing further
provides a fast and inexpensive patterning technique. Non-Final Act. 5
(citing Bulovic ¶ 7). The Examiner persuasively determined that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to form Park’s PMMA sacrificial layer by ink-jet printing because
Bulovic teaches that “it was known to ink-jet print PMMA sacrificial layers
as a fast, low-cost method that provides a superior flat surface for
subsequent deposition of a MEMS cantilever.” Non-Final Act. 5.
Moreover, the bulk of Appellant’s arguments (1) and (2) are directed
to attacking the individual primary reference rather than the combined
teaching of the references. In this case, Appellant has not identified any
particular claim limitation that is neither described nor suggested in the cited
references. Appellant’s criticisms of the individual reference, therefore, does
not establish nonobviousness. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“[T]he test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.”).
In rejecting claim 1, the Examiner provided adequate reasoning
having a rational underpinning to support the legal conclusion of
obviousness. We, therefore, are not persuaded that the Examiner reversibly
erred in concluding that the subject matter of claim 1 is prima facie obvious.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
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instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
For the reasons set forth above, we affirm the rejection of claims 1
and 6–8.
C. Rejection of claims 2, 16, 17, and 19 over Park, Bulovic, Liu,
and Daniel
Appellant argues for reversal of the rejection of these claims on the
basis of limitations found in both independent claim 16 and dependent claim
2. Appeal Br. 12–14. We, therefore, select claim 16 as representative of the
claims subject to this ground of rejection and limit our discussion to this
claim. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 17, and 19 will stand or fall
with claim 16.
The Examiner rejected claim 16 as unpatentable over the combination
of Park, Bulovic, Liu, and Daniel. Non-Final Act. 6–9.
Appellant alleges that the Examiner’s proposed combination of the
applied prior art would not have rendered obvious claim 16’s limitation
“printing a flexible beam structure including printing a first polymer layer on
the sacrificial layer, printing a conductive layer on the first polymer layer,
and printing a second polymer layer on the conductive layer.” Appeal Br. 12.
Appellant argues that Daniel is deficient because there is no disclosure
that Daniel’s piezo-polymer layer 18 can be printed. Id. at 12–13. Appellant
contends that Daniel merely discloses a laundry list of MEMS structures and
other devices, which may be printed as layers. Reply Br. 2. According to
Appellant, Daniel’s general disclosure fails to provide any insight into the
specific ordered steps of printing the claimed layers. Id.
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We are not persuaded by Appellant’s individual criticism of Daniel.
See Keller, 642 F.2d at 426. As the Examiner found, Liu teaches multilayer
cantilever beams, which are constructed from dielectric material and
conductive material. Non-Final Act. 6–9; Answer 4. Although Liu does not
specifically teach inkjet printing the multilayer structure, the Examiner
found that Daniel teaches a printing process for depositing dielectric
polymer material, piezoelectric/piezoresistive material, and conductive
material. Non-Final Act. 5; Answer 5 (citing Daniel ¶¶ 13–18).
We agree with the Examiner that it would have been obvious at the
time of the invention to use Daniel’s printed dielectric polymers as the
particular dielectric materials in Liu’s first dielectric layer 120 and second
dielectric layer 118 “because they are recognized as materials useful for the
same purpose of controlling” a cantilever’s mechanical properties in MEMS
devices. Non-Final Act. 7. As the Examiner determined, it also would have
been obvious at the time of the invention to use Daniel’s printing to fabricate
the beam structure, including conductive layer 122, because doing so would
have been “particularly useful for tuning” the cantilever’s rigidity. Id.
For the reasons set forth above, we affirm the rejection of claims 2,
16, 17, and 19.
D. Rejection of claims 2, 3, 16, 17, and 19 over Park, Bulovic, Liu,
Colton, Tai, and Daniel
Appellant argues for reversal of the rejection of these claims on the
basis of limitations found in both independent claim 16 and dependent claim
2. Appeal Br. 14–16. We, therefore, select claim 16 as representative of the
claims subject to this ground of rejection and limit our discussion to this
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claim. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 3, 17, and 19 will stand or fall
with claim 16.
The Examiner rejected claim 16 as unpatentable over the combination
of Park, Bulovic, Liu, Colton, Tai, and Daniel. Non-Final Act. 9–10.
Appellant argues, inter alia, that the combined teachings of Park,
Bulovic, Liu, and Daniel would not have rendered claim 16 obvious. Appeal
Br. 15. Appellant particularly argues that Colton does not teach that the
MEMS cantilever can be ink-jet printed by printing a first Teflon polymer
layer, printing a conductive layer on the first polymer layer, and then
printing a second Teflon polymer layer on the conductive layer. Appeal Br.
15.
We are not persuaded by Appellant’s individual criticism of Colton.
See Keller, 642 F.2d at 426.
As the Examiner found, the combined teachings of Park, Bulovic, Liu,
and Daniel disclose or suggest printing a first polymer layer, printing a
conductive layer on the first polymer layer, and printing a second polymer
layer on the conductive layer. See Non-Final Act. 6–7; See C. Rejection of
claims 2, 16, 17, and 19 over Park, Bulovic, Liu, and Daniel (Rejection C.),
supra. The Examiner, furthermore, has made reasoned findings that:
(i) Colton teaches Teflon can help control stiffness of a MEMS cantilever
and (ii) Tai teaches that Teflon can be used in a MEMS relay. Non-Final
Act. 10; Answer 6–7.
Appellant argues that Tai’s teaching that Teflon be used for
electrically insulating a coil in MEMS relay does not teach one of ordinary
skill in the art that a dielectric layer in a printed multi-layer cantilever beam
can be Teflon. Appeal Br. 16.
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Appellant’s individual criticism of Tai is also not persuasive. See
Keller, 642 F.2d at 426. We agree with the Examiner that one of ordinary
skill in the art would have recognized from the combined teachings that the
stiff, dielectric material layer in Liu’s MEMS can be made of Colton’s and
Tai’s Teflon. Answer 6; Non-Final Act. 9–10.
For the reasons set forth above, we affirm the rejection of claims 2, 3
16, 17, and 19.
E. Rejection of claims 4, 5, and 20 over Park, Bulovic, and
Weaver
Appellant argues for reversal of the rejection of these claims on the
basis of limitations found in independent claim 20. Appeal Br. 17.
Accordingly, we limit our discussion to claim 20. Claims 4 and 5 will stand
or fall with independent claim 20 from which they directly or indirectly
depend.
The Examiner rejected claim 20 as unpatentable over the combination
of Park, Bulovic, Liu, and Daniel. Non-Final Act. 11.
Appellant argues Park’s and Bulovic’s printed cantilever beams are
distinguished from the claimed subject matter of a printed polymer
cantilever beam. Appeal Br. 17. Appellant specifically argues that Park’s
and Bulovic’s printed cantilever beams are fabricated from metallic ink or a
silver nanocrystalline metallic ink, respectively. Appellant also argues that
Weaver’s layers, including conductive layer 98′, are not printed polymer
layers for a cantilever beam in a MEMS switch. Id.; Reply Br. 3.
We are not persuaded by these arguments.
As set forth in § B, supra, Park and Bulovic would have rendered
obvious the limitations of claim 1. See also Non-Final Act. 4–5. The
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Examiner found that Park and Bulovic do not teach that the beam comprises
a conductive polymer layer, as required by claim 20. Id. at 11; compare
claims 1 and 20. Appeal Br. 21, 24 (Claims App.).
The Examiner, however, found that Weaver teaches that a beam
structure of a MEMS device can be made of a silver conductive material or a
PEDOT conductive polymer. Non-Final Act. 11 (citing Weaver ¶¶ 2, 3, 50).
The Examiner persuasively determined that it would have been obvious at
the time of the invention to substitute Weaver’s PEDOT conductive material
for Park’s and Bulovic’s conductive metallic ink in a cantilever beam. Non-
Final Act. 11; Answer 7.
For the reasons set forth above, we affirm the rejection of claims 4, 5,
and 20.
F. Rejection of claims 9–11 over Park, Bulovic, and Liu
Claims 9–11 depend, directly or indirectly, from independent claim 1.
Appellant argues that these claims are patentable over the asserted prior art
for the same reasons that the parent independent claim is patentable. Appeal
Br. 18. In particular, Appellant argues that the combined teachings fail to
“teach or suggest a method for fabricating a MEMS switch that includes
printing a flexible beam structure on a printed sacrificial layer.” Id.
This argument is not persuasive for at least the reasons discussed
above in § B.
For the reasons set forth above, we affirmed the rejection of
independent claim 1. Thus, we also affirm the rejection of dependent claims
9–11.
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G. Rejection of claims 11 and 12 over Park, Bulovic, Wan, and Tai
Appellant argues that: (1) Wan does not teach or suggest a method for
fabricating a MEMS switch, which includes printing a flexible beam
structure on a printed sacrificial layer, and (2) “none of Park, Bulovic,
Wan[,] or Tai teach or suggest printing polymer electrodes for an MEMS
switch or otherwise.” Appeal Br. 17.
First, argument (1) is not persuasive for at least the reasons discussed
above in § B with respect to claim 1. Claims 11 and 12 depend directly from
claim 1.
Second, the Examiner found that Park teaches or discloses the claimed
bias (or gate) electrode. Non-Final Act. 4–5. We agree with the Examiner
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to use: (i) Wan’s ladder electrode as Park’s and Bulovic’s
particular gate electrode to lower the required actuation voltage and (ii) Tai’s
polymer insulator instead of silica insulator in Wan’s modified ladder
electrode because polymers were known insulators suitable for use in
MEMS switches. Id.
For the reasons set forth above, we affirm the rejection of claims 11
and 12.
H. Rejection of claims 11 and 13 over Park, Bulovic, Liu, and
Nelson
Claims 11 and 13 depend directly from independent claim 1.
Appellant argues that these claims are patentable over the asserted prior art
for the same reasons that the parent independent claim is patentable. Appeal
Br. 19. In particular, Appellant argues that the combined teachings fail to
“teach or suggest a method for fabricating a MEMS switch that includes
printing a flexible beam structure on a printed sacrificial layer.” Id.
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This argument is not persuasive for at least the reasons discussed
above in § B.
For the reasons set forth above, we affirmed the rejection of
independent claim 1. Thus, we also affirm the rejection of dependent claims
11 and 13.
I. Rejection of claims 14 and 15 over Park, Bulovic, and Ebel
Claims 14 and 15 depend, directly or indirectly, from independent
claim 1. Appellant argues that these claims are patentable over the asserted
prior art for the same reasons that the parent independent claim is patentable.
Appeal Br. 19. In particular, Appellant argues that the combined teachings
fail to “teach or suggest a method for fabricating a MEMS switch that
includes printing a flexible beam structure on a printed sacrificial layer.” Id.
This argument is not persuasive for at least the reasons discussed
above in § B.
For the reasons set forth above, we affirmed the rejection of
independent claim 1. Thus, we also affirm the rejection of dependent claims
14 and 15.
J. Rejection of claims 16–18 over Park, Bulovic, Liu, Daniel,
Nelson
Appellant argues for reversal of the rejection of these claims on the
basis of limitations found in independent claim 16. Appeal Br. 19.
Accordingly, we limit our discussion to claim 16. Claims 17 and 18 will
stand or fall with independent claim 16 from which they directly or
indirectly depend.
Appellant argues that these claims are patentable over the asserted
prior art for the same reasons that the parent independent claim is patentable.
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Id. In particular, Appellant argues that the combined teachings fail to “teach
or suggest printing a first polymer layer, then printing a conductive layer on
the first polymer layer[,] and then printing a second polymer layer on the
conductive layer.” Id.
This argument is not persuasive for at least the reasons discussed
above in § C.
For the reasons set forth above, we affirmed the rejection of
independent claim 16. Thus, we also affirm the rejection of dependent
claims 17–18.
K. Rejection of claims 16–18 over Park, Bulovic, Liu, Colton, Tai,
Daniel, and Nelson
Appellant argues for reversal of the rejection of these claims on the
basis of limitations found in independent claim 16. Appeal Br. 19.
Accordingly, we limit our discussion to claim 16. Claims 17 and 18 will
stand or fall with independent claim 16 from which they directly or
indirectly depend.
Appellant argues that these claims are patentable over the asserted
prior art for the same reasons that the parent independent claim is patentable.
Id. In particular, Appellant argues that the combined teachings fail to “teach
or suggest printing a first polymer layer, then printing a conductive layer on
the first polymer layer[,] and then printing a second polymer layer on the
conductive layer.” Id.
This argument is not persuasive for at least the reasons discussed
above in § C.
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For the reasons set forth above, we affirmed the rejection of
independent claim 16. Thus, we also affirm the rejection of dependent
claims 17–18.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
3 112(b) Indefiniteness 3
1, 6–8 103 Park, Bulovic, 1, 6–8
2, 16, 17, 19 103 Park, Bulovic, Liu, Daniel 2, 16, 17, 19
2, 3, 16, 17, 19 103 Park, Bulovic, Liu, Colton, Tai, Daniel
2, 3, 16, 17,
19
4, 5, 20 103 Park, Bulovic, Weaver 4, 5, 20
9–11 103 Park, Bulovic, Liu 9–11
11, 12 103 Park, Bulovic, Wan, Tai 11, 12
11, 13 103 Park, Bulovic, Liu, Nelson 11, 13
14, 15 103 Park, Bulovic, Ebel 14, 15
16–18 103 Park, Bulovic, Liu, Daniel, Nelson 16–18
16–18 103 Park, Bulovic, Liu, Colton, Tai, Daniel, Nelson 16–18
Overall Outcome 1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED